Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/27/25 has been considered by the examiner.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2022-093030 (OKUHARA ET AL).
Regarding claim 1: The reference discloses a resin composition comprising an epoxy resin, a phenolic resin, a polyether ester with no phosphorus atoms as a flow adjuster (specifically Disparlon 3600N) and an inorganic fill which may be a magnesium oxide, aluminum nitride or aluminum oxide where the inorganic filler may have a particle size distribution having two peaks in a range of 0.1 to 20 um and the amount of filler is 60-96% by mass. See (Thermosetting Resin A) section for epoxy resin, see (Hardener) section for phenolic resin, see (Organic thixotropic agent) section for the flow adjuster, and see (Inorganic filler B) section for the filler. It is recognized that the reference does not specify the exact same filler particle size distribution and mass %. However, as the ranges significantly overlap, it would have been obvious to one of ordinary skill in the art to produce the claimed resin.
Regarding claims 2-4: The inorganic filler may be two different sizes. See (inorganic filler b).
Regarding claims 6-8: The flow adjuster may be the same flow adjuster in Applicant’s Examples, i.e. Disparlon 3600N which would meet the claimed limitations.
Claims 9-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2022-093030 (OKUHARA ET AL) in view of WO 2021/079900 (YAMAUCHI ET AL).
The Okuhara reference discloses the resin as disclosed in the above 103 rejection. It is recognized that the reference does not specify a laminate, an impregnated prepreg, wiring board, etc. However, the Yamauchi reference shows that using epoxy/filler resins for these applications are known. Therefore, it would have been obvious to one of ordinary skill in the art to use the Okuhara resin in the Yamauchi laminate, prepreg, etc. One would expect the improved flatness and insulation properties.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH EVANS MULVANEY whose telephone number is (571)272-1527. The examiner can normally be reached 8am-4:30pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Ruthkosky can be reached at 571-272-1291. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH E MULVANEY/Primary Examiner, Art Unit 1785